DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the adhesive layer comprises a polymer material with an adhesive property, the polymer material comprises polyvinylidene fluoride (PVDF)….the adhesive layer is coated with aqueous polyvinylidene fluoride…”. Claim 3 recites “the adhesive layer comprises a polymer material with an adhesive property, the polymer material comprises polyvinylidene fluoride (PVDF)….the adhesive layer is coated with oil-based polyvinylidene fluoride…”. The claims are indefinite because it is not clear if the “polyvinylidene fluoride” that is coated on the adhesive layer (the second limitation) is the same as the polyvinylidene fluoride that comprises the adhesive layer (the first limitation). Stated a different way, it is unclear if 1) the PVDF of the second limitation is coated on an already-existing adhesive layer, or 2) if the PVDF of the second limitation forms the adhesive layer. If the second interpretation is intended, it is suggested that the limitation “coated” be changed to “formed by coating” to make it clear that the adhesive layer is formed by coating the aqueous or oil based PVDF.
In addition, it is unclear if the recitation of “polyvinylidene fluoride (PVDF)” in claims 1 and 3 encompasses copolymers of PVDF as well as the homopolymer. Based on the specification and dependent claims, it appears to encompass copolymers; however, the language should be updated to make this clear.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Honda et al (US 20200266407) in view of Ogata et al (US 20170098809).
Regarding claims 1 and 3, Honda et al. is directed to a separator comprising a porous substrate and an adhesive layer formed on one or both sides of the substrate (abstract). The adhesive layer comprises a PVDF polymer comprising PVDF-HFP copolymer resins “A” and “B” (abstract). In Example 1, it is taught that the separator has a Gurley value of 213 s/100cc and a film thickness of 13 micrometers. The porous substrate in Example 1 has a Gurley value of 160 s/100cc and a thickness of 9 microns. Thus, the adhesive layer has a thickness of 4 microns and a Gurley value of 53 s/100cc (213-160). Thus, the claimed value of “P” (increase in permeability per unit area of coating layer) is 13.25 s/100cc/µm (53/4). Also in Example 1 (see Table 1), the dry adhesive strength of the separator to the positive electrode is 0.083 N/15mm (see also [0217]). Thus, the claimed value of “A” is 5.33 N/m. Accordingly, the ratio C=A/P is 0.42 for Example 1, anticipating the claimed range. Other disclosed values of C include: 0.49 (Example 2), 0.45 (Example 3), 0.83 (Example 5) and 0.59 (Example 6). These are all anticipatory of the claimed range.
Regarding claims 1 and 3, which recite the adhesive layer “is formed by coating aqueous vinylidene fluoride polymer” and “is formed by coating oil-based vinylidene fluoride polymer”, the limitations are interpreted as product-by-process limitations as the water or oil is subsequently removed from the separator and are not part of the final product (see [0042] of instant specification). See also MPEP 2113 and further remarks below. Regarding claims 5-8, the separator is used in a lithium battery between the positive and negative electrode ([0171]).
Honda et al. do not expressly teach the ratio of an alpha-PVDF within a crystalline region of the PVDF as recited in claims 1 and 3, in particular that the ratio is greater than 30% and less than 70% when the coating is aqueous PVDF (claim 1), or that the ratio is less than 20% when the coating is oil-based PVDF (claim 3).
Ogata et al. is directed to a separator for a lithium battery having a PVDF based resin coating on a substrate ([0016], [0051]). The PVDF based resin can contain two PVDF-HFP copolymer resins having two different amounts of HFP ([0028]). The PVDF based resin comprises a ratio of alpha-PVDF to a total amount of crystalline PVDF (alpha plus beta) of between 10-65 mol% (abstract, [0051]).
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would be motivated to use a ratio of alpha-PVDF within a crystalline region (alpha plus beta) of the PVDF of Honda et al. of 10-65%, thereby rendering the claimed ranges obvious. In [0011], Ogata et al. teach that setting proportions of alpha and beta crystal forms to specific ranges “allows the porous layer to be used for a constituent member of a nonaqueous secondary battery separator having excellent shutdown characteristics.” Accordingly, the artisan would be motivated to use a ratio of alpha-PVDF within a crystalline region (alpha plus beta) of the PVDF of 10-65%. Furthermore, as noted above, the limitations “aqueous” and “oil-based” in claims 1 and 3 are product-by process limitations because these solvents are eventually removed. It is noted that the range of Ogata et al. overlaps with the claimed range in both of these cases.
Regarding claims 2 and 4, which recite an overall crystallinity of a raw material of a PVDF copolymer of 10-50%, it is submitted that a skilled artisan would recognize this value as a result-effective variable that can be routinely optimized as it concerns PVDF coatings for separators. For example, [0053] of Ogata et al. discusses the contributions to separator physical properties each type of crystalline PVDF makes. As part of the determination of overall properties of the separator, the skilled artisan would also take into account amorphous PVDF in conjunction with the crystalline varieties, such that the total ratio of crystalline varieties in the PVDF would be optimizable. It has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-25 of copending Application No. 19/001803 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘803 application anticipate the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
January 30, 2026